Orrick Announced Patent Office Rejects Tessera's U.S. Patent No. 5,852,326 Again

Orrick, Herrington & Sutcliffe LLP announced today that the United States Patent and Trademark Office issued an office action confirming the rejections of all claims of Tessera's 5,852,326 patent inex partereexamination. The Patent Office previously rejected these claims in an earlier office action.

Tessera is asserting the '326 patent in two investigations in the International Trade Commission - Investigation Nos. 337-TA-605 and 337-TA-649. The Patent Office has rejected all claims of the '326 that Tessera is asserting in the ITC.

For example, in response to Tessera's attempt to amend the '326 patent's specification to avoid invalidation, the Patent Office stated:

If Patentee [Tessera] wished the meaning to be specifically narrowed to that meaning proposed by Patentee above, then it should have been originally submitted in the original specification. If Patentee [Tessera] had wished the claims to reflect the above meaning then the claims should have explicitly recited the extent and purpose of the movement. Examiner respectfully submits that it is improper for Patentee [Tessera] to change the scope of the claims by attempting to amend the claims by adding new matter to the specification rather than by amending the claims themselves to include the additional features of the extent and the purpose of the movement.

'326 Office Action, p. 13 (August 1, 2008).

Regarding a prior art referenced to Okinaga, the Patent Office stated, "Patentee's arguments [Tessera's arguments] directed to Okinaga have been considered but are not found persuasive." ['326 Office Action, p. 57 (August 1, 2008).]

The Patent Office also stated regarding Tessera's attempts to distinguish Okinaga:

Patentee's comment [Tessera's comment] regarding concrete bridges and railroad tracks being taken as flexible is quite accurate; they are flexible. If Patentee [Tessera] were to bother investigating the matter, which apparently he [it] has not, he [it] would find that bridges are intentionally engineered to be flexible in order to avoid cracking due to forces resulting from, inter alia, shifting earth, earthquakes, and vibrations from traffic passing over the bridge. The same holds for railroad tracks. Accordingly, Patentee's argument [Tessera's argument] only reinforces Examiner's indication that the plastic backing element (base 1) in Okinaga is flexible.

'326 Office Action, p. 58 (August 1, 2008).

Led by its patent litigation counsel, Michael Heafey of Orrick and its general counsel Juliette Chan, Siliconware Precision Industries Company, Ltd. and its U.S. subsidiary requested reexamination of the asserted claims of Tessera's '326 patent as part of Siliconware's defenses against Tessera's accusations of patent infringement. Also representing Siliconware is Greg Novak and James Murphy of Novak Druce + Quigg LLP.

About Orrick

Orrick, Herrington & Sutcliffe LLP is a global law firm with more than 1,000 lawyers in North America, Europe and Asia. The firm focuses on litigation, complex and novel finance and innovative corporate transactions. The firm's 18 offices are located in Beijing, Hong Kong, London, Los Angeles, Milan, Moscow, New York, Orange County, Pacific Northwest, Paris, Rome, Sacramento, San Francisco, Shanghai, Silicon Valley, Taipei, Tokyo and Washington, D.C.

About Novak, Druce + Quigg

Novak, Druce + Quigg (NDQ) LLP is national firm focusing exclusively on complex intellectual property matters with more than 45 attorneys, agents, and scientific/technical advisors and analysts with offices in Houston, Texas; Washington, D.C.; and San Francisco, CA. NDQ attorneys help its clients navigate the complexities of U.S. intellectual property law by securing, enforcing, and defending their intellectual property rights. With the leadership of Gregory V. Novak and Tracy W. Druce, the firm has built a national reexamination practice including the successful involvement in the NTP cases on behalf of client Research in Motion (RIM) with 2,185 total claims rejected.